United States District Court, D. Oregon
Mansfield, Harris Bricken, LLP, John J. Edmonds, Stephen F.
Schlather, Shea N. Palavan, Brandon G. Moore, and Eric R.
Carr, Collins Edmonds & Schlather, PLLC, Attorneys for
S. Gill, Stoll Stoll Berne Lokting & Shlachter, PC, Jenny
W. Chen, Chen IP Law Group, Andrew T. Oliver, Amin, Turocy
& Watson, LLP Attorneys for Defendant.
OPINION AND ORDER ON PRETRIAL MOTIONS, OBJECTIONS,
AND OTHER PRETRIAL MATTERS
MICHAEL H. SIMON UNITED STATES DISTRICT JUDGE.
Mass. Engineered Design, Inc. (“Mass”), brings
this lawsuit against Defendant, Planar Systems, Inc.
(“Planar”), alleging infringement of U.S. Patent
No. RE36, 978 (the “978 Patent”) and U.S. Patent
No. 8, 102, 331 (the “331 Patent”). A jury trial
was held, beginning April 24, 2018, and ending May 8, 2018.
The jury found that Planar was liable for direct
infringement, active inducement, and as a contributory
infringer and that neither the 978 Patent nor the 331 Patent
were invalid. The jury then awarded Mass. money damages in
the total amount of $1, 150, 000. The jury, however, was
unable to reach a unanimous verdict on the question of
whether Planar's infringement was willful. The Court
declared a mistrial only on that question, and otherwise
accepted the jury's verdict. The Court then scheduled a
new jury trial solely on the question of willfulness. A
two-day jury trial is scheduled to begin on Monday, July 9,
2018, at 10:00 a.m., that will address only the question of
willfulness. In anticipation of this second jury trial, the
parties have filed various pretrial motions, objections, and
related matters. This Opinion and Order addresses the
parties' pending pretrial motions, objections, and other
pretrial matters. Finally, after the jury trial on
“willfulness” concludes, the Court will conduct a
one-day bench trial on Planar's defense of
Strict Time Limits to be Observed at Trial
the telephone status conference held on June 4, 2018, the
parties agreed to the following time limits, which the Court
will enforce: each party is allowed 20 minutes for opening
statement, three hours for all witness testimony
(i.e., direct, cross, redirect, and re-cross
examinations), and 30 minutes for closing argument. ECF 320.
These time limits, however, do not include jury selection or
the Court's instructions to the jury. The Court finds
these time limits are reasonable. See Navellier v.
Sletten, 262 F.3d 923, 941 (9th Cir. 2001) (“Trial
courts have broad authority to impose reasonable time limits.
Such limits are useful to prevent undue delay, waste of time,
or needless presentation of cumulative evidence. While trial
courts have discretion to expedite the completion of trials,
they must not adhere so rigidly to time limits as to
sacrifice justice in the name of efficiency.”)
(quotation marks and citations omitted).
Court will monitor the parties' time “chess clock
style, ” with each party's time beginning when
counsel starts an examination segment (e.g., direct,
cross, redirect, or re-cross) and ending when counsel
concludes that segment. The Court will inform the parties of
their consumed and remaining times at the conclusion of each
trial day, or more often upon request.
Planar's Motions in Limine (ECF 361)
Motion No. 1: Exclude certain witness testimony
IN PART, OTHERWISE DENIED
moves to exclude “testimony by irrelevant
witnesses.” Planar objects to five witnesses. Regarding
those witnesses for whom the Court has overruled Planar's
motion in limine, Planar may object at trial to any
specific question or answer, if Planar believes the question
or answer is improper under the rules of evidence or any of
the Court's rulings.
Jerry Moscovitch - DENIED
objects that Mr. Moscovitch should not be allowed to testify
at all at the second trial (i.e., the
“willfulness trial”). This objection is
overruled. At the first trial, the Court ruled that Mr.
Moscovitch would not be allowed to testify regarding
willfulness because Mass's initial witness statement
disclosures did not include willfulness as a topic of Mr.
Moscivitch's testimony. During the first jury trial,
however, Mr. Moscovitch testified regarding a meeting that
took place in 2007 between Mr. Moscovitch and Planar relating
to Mr. Moscovitch's patented products. Emails relating to
that meeting were then located and produced. Those emails
were between Planar employees and Mr. Moscovitch. In lieu of
introducing those emails into evidence, the parties agreed at
the first trial to a stipulation that was included in the
jury instructions. Planar objects to including that same
stipulation in the jury instructions in the second trial.
Accordingly, the Court will not inform the jury of that
Court, however, will allow Mr. Moscovitch to testify about
the 2007 meeting and the related emails. In addition, the
Court will allow these emails and other related documents to
be received in evidence, if a proper foundation is provided
at trial and these documents do not otherwise contain
objectionable material. The 2007 meeting and related emails
are relevant to when Planar first became aware of Mass's
patent and to Mass's theory that Planar was allegedly
involved in the copying of Mass's product.
the burden is on Mass. to offer evidence that this meeting in
2007 is connected to Planar's requesting HighGrade to
copy Ergotron's product that infringed on Mass's
product, the Court is satisfied that as a result of and
subsequent to the original trial, Planar has had sufficient
notice of the meeting, Mr. Moscovitch's testimony, and
the emails for the introduction of this evidence, including
Mr. Moscovitch's testimony, not to be unfairly
prejudicial. The Court also notes that during a June 4, 2018
telephone status conference, the Court stated that it would
allow Mr. Moscovitch to testify during the second trial on
the same matters to which he testified in the first trial.
Thus, there is no unfair surprise to Planar. See ECF
320 and 356. Mr. Moscovitch, however, may not offer testimony
in which he speculates about Planar's “state of
as a condition of the Mr. Moscovitch being allowed to testify
on these topics, the Court will allow Planar, if it chooses,
to take the deposition of Mr. Moscovitch, not to exceed two
hours, before the jury trial commences on Monday, July 9th.
This deposition may only cover the topics of the 2007
meeting, the related documents, and the alleged copying of
Mass's products. Upon request by Planar, Mass. shall make
Mr. Moscovitch available for such a deposition on Saturday
(July 7th), Sunday (July 8th), or early Monday morning (July
9th), at a time and place mutually convenient to the parties.
Walter Bratic - GRANTED
John Akin - RESERVED
asserts that Dr. Akin will not be called in the jury trial
and will only be called as a rebuttal witness to Dr. Yee in
the bench trial on the issue in inequitable conduct, if Dr.
Yee testifies. Because at this time it is not known whether
Dr. Yee will testify at the bench trial, the Court reserves
ruling on Planar's objection to Dr. Akin.
Peter Heuser - GRANTED
Ming-Hsien Huang - DENIED
objects that Mr. Huang should not be allowed to testify
regarding “copying” because the only copying that
is relevant would be copying by Planar. Mr. Huang, however,
is the founder of HighGrade Tech. Co., Ltd.
(“HighGrade”). HighGrade is a supplier to Planar
for the products at issue in this case. According to Planar,
neither HighGrade nor Mr. Huang is an agent or employee of
theory propounded by Mass, however, is that Planar sent
HighGrade a product made by Ergotron, Inc.
(“Ergotron”) that infringed Mass's patents
and Planar asked HighGrade to design a product similar to
Ergotron's infringing products, along with providing
HighGrade specifications that Planar knew or should have
known also would infringe Mass's patents. Thus, the fact
that HighGrade was the entity doing the “copying”
is not necessarily dispositive on the issue of relevance, if
Mass. provides evidence that HighGrade did so at Planar's
request or direction. The assertion by counsel for Planar
that there is no such evidence is an insufficient basis on
which to grant a motion in limine. If it is a
correct assertion, however, it may support the Court granting
a directed verdict or otherwise excluding Mr. Huang's
testimony or instructing the jury to disregard it.
Motion No. 2: Preclude Mr. Moscovitch from Testifying at the
Willfulness Trial - DENIED
a primarily a duplicate of the motion above and the
Court's discussion in Section 2(a)(i) is incorporated by
this reference. Additionally, Planar objects to Mr.
Moscovitch testifying to: (1) dates of notice of infringement
and dismissal of the first lawsuit against Planar; (2)
Mass's reasons for dismissing the first lawsuit; (3) the
alleged 2007 meeting between Mass. and Planar; and (4)
alleged copying of Mass's products by Ergotron.
Planar's first objection is that willfulness only
involves facts Planar knew or had reason to know and thus no
other facts can be included in the trial. The Court
disagrees. Although Planar is correct that for a finding of
willfulness by the infringer, only the facts known or that
should have been known by the infringer may be considered,
but a trial is not held in a vacuum. Having some
understanding of what was happening at the time, such as why
the first lawsuit was voluntarily dismissed by Mass, gives
the jury context in which it can better understand the full
picture in order to focus on the facts relevant to the
question of willfulness. If a jury is distracted or confused
about facts that would seem quite important (such as why a
company would dismiss a lawsuit and then bring it again a few
years later), that is not a fair or efficient trial. The
Court will not admit unreasonably prejudicial or confusing
facts and will instruct the jury on the law of ...